Optima, Inc. and Optima Real Estate, Inc. v. Kenric Hwang
Claim Number: FA0708001067632
Complainant is Optima, Inc. and Optima Real Estate, Inc. (“Complainant”), represented by James F. Gossett, 120 South Riverside Plaza, #1200, Chicago, IL 60606. Respondent is Kenric Hwang (“Respondent”), 3314 N 68th St, 207W, Scottsdale, AZ 623-889-1270.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <optimacondos.com>, registered with Schlund+Partner Ag.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 23, 2007; the National Arbitration Forum received a hard copy of the Complaint on August 27, 2007.
On August 27, 2007, Schlund+Partner Ag confirmed by e-mail to the National Arbitration Forum that the <optimacondos.com> domain name is registered with Schlund+Partner Ag and that Respondent is the current registrant of the name. Schlund+Partner Ag has verified that Respondent is bound by the Schlund+Partner Ag registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On August 31, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of September 20, 2007 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@optimacondos.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On September 25, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <optimacondos.com> domain name is confusingly similar to Complainant’s OPTIMA mark.
2. Respondent does not have any rights or legitimate interests in the <optimacondos.com> domain name.
3. Respondent registered and used the <optimacondos.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Optima Inc. and its sister company, Optima Real Estate, Inc. (collectively, “Complainant”), are both wholly owned corporations of the same owner, David Hovey. Complainant is in the business of designing, constructing, developing, and managing condominium properties and other real estate. Complainant has conducted business under the OPTIMA mark since 1977 and has spent a substantial amount of time and money developing, advertising, and promoting its services under the mark. Complainant holds a trademark registration for the OPTIMA mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,645,523 issued May 21, 1991) and currently operates a website located at the <optimaweb.com> domain name.
Respondent registered the <optimacondos.com> domain name on November 13, 2004. Respondent’s disputed domain name resolves to a website that offers condominium units for sale or rent in buildings designed, constructed, developed, and/or managed by Complainant, in competition with Complainant, which sells and rents such units through its sister companies. Furthermore, Respondent’s website also features unrelated advertisements sponsored by Google.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Complainant asserts its rights in the OPTIMA mark through
its registration of the mark with the USPTO.
The Panel finds that this is sufficient to establish Complainant’s
rights in the mark pursuant to Policy ¶ 4(a)(i). See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18,
2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes
Complainant's rights in the mark.”); see
also Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum
Sept. 16, 2002) (“Under
Complainant first alleges that Respondent’s <optimacondos.com> domain name is confusingly similar to Complainant’s OPTIMA mark. The Panel agrees with this allegation, as the disputed domain name contains the entire OPTIMA mark and simply adds the generic term “condos” onto the mark. As the term “condos” is clearly descriptive of Complainant’s business, its addition does not negate any confusing similarity between the <optimacondos.com> domain name and Complainant’s OPTIMA mark. Moreover, the addition of the generic top-level domain “.com” is irrelevant for the purposes of Policy ¶ 4(a)(i), as a top-level domain is required of all domain names. Therefore, the Panel finds that the <optimacondos.com> domain name is confusingly similar to Complainant’s OPTIMA mark pursuant to Policy ¶ 4(a)(i). See Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where the respondent’s domain name combines the complainant’s mark with a generic term that has an obvious relationship to the complainant’s business); see also Marriott Int’l, Inc. v. Café au lait, FA 93670, (Nat. Arb. Forum Mar. 13, 2000) (finding that the respondent’s domain name <marriott-hotel.com> is confusingly similar to the complainant’s MARRIOTT mark); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar); see also Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”).
The Panel finds that Policy ¶ 4(a)(i)
has been satisfied.
Complainant next asserts that Respondent lacks rights and legitimate interests in the <optimacondos.com> domain name pursuant to Policy ¶ 4(a)(ii). Complainant has the initial burden of making a prima facie case to prove this assertion, and then the burden shifts to Respondent to show that it does have rights or legitimate interests in the disputed domain name. The Panel finds that Complainant has sustained its burden in the present case. See Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”).
As Respondent has not submitted a response to the Complaint in this proceeding, the Panel infers that Respondent lacks rights and legitimate interests in the <optimacondos.com> domain name. See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding it appropriate for the panel to draw adverse inferences from the respondent’s failure to reply to the complaint); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence). However, the Panel will now evaluate all evidence in the record to determine if Respondent does have rights or legitimate interests under Policy ¶ 4(c).
Respondent’s <optimacondos.com> domain name resolves to a website that sells and rents condominium units in competition with Complainant and features unrelated advertisements. Based on this use, the Panel presumes that Respondent earns money when Internet users visit this website. The Panel finds that this does not constitute either a bona fide offering of goods or services or a legitimate noncommercial or fair use as contemplated by Policy ¶¶ 4(c)(i) and (iii). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's demonstrated intent to divert Internet users seeking Complainant's website to a website of Respondent and for Respondent's benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also State Farm Mut. Auto. Ins. Co. v. LaFaive, FA 95407 (Nat. Arb. Forum Sept. 27, 2000) (“The unauthorized providing of information and services under a mark owned by a third party cannot be said to be the bona fide offering of goods or services.”).
Complainant further asserts that Respondent is not commonly known by the <optimacondos.com> domain name, which also indicates a lack of rights and legitimate interests under Policy ¶ 4(c)(ii). In Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003), the panel stated that “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply. In the present case, Respondent’s WHOIS information previously indicated that Respondent is “Kenric Hwang” and currently indicates that Respondent is “Oneandone.” This suggests that Respondent is not known by the <optimacondos.com> domain name, and there is no further evidence in the record that challenges this assertion. Moreover, Complainant has not authorized Respondent to use its OPTIMA mark for any purpose. Thus, the Panel finds that Respondent also lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). See also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name).
The Panel thus finds that Policy ¶ 4(a)(ii)
has been satisfied.
Lastly, Complainant alleges that Respondent registered and is using the <optimacondos.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii). The panel in S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) found bad faith registration and use when the respondent registered the domain name in question to disrupt the business of the complainant, which was a competitor of the respondent. The Panel finds a similar situation in the present case, as Respondent is using the <optimacondos.com> domain name to redirect Internet users to a website that sells and rents condominium units in direct competition with Complainant. Therefore, this constitutes a disruption of Complainant’s business and qualifies as bad faith registration and use under Policy ¶ 4(b)(iii). See also EthnicGrocer.com, Inc. v. Unlimited Latin Flavors, Inc., FA 94385 (Nat. Arb. Forum July 7, 2000) (finding that the minor degree of variation from the complainant's marks suggests that the respondent, the complainant’s competitor, registered the names primarily for the purpose of disrupting the complainant's business).
Furthermore, the Panel presumes that Respondent benefits commercially from the website that resolves from the <optimacondos.com> domain name. Respondent is thus capitalizing on the likelihood that Internet users, presumably seeking Complainant’s business, will be confused as to Complainant’s affiliation with the disputed domain name and corresponding website. This is further evidence of Respondent’s bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Toyota Motor Sales U.S.A. Inc. v. Clelland, FA 198018 (Nat. Arb. Forum Nov. 10, 2003) (“Respondent used <land-cruiser.com> to advertise its business, which sold goods in competition with Complainant. This establishes bad faith as defined in Policy ¶ 4(b)(iv).”); see also G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that the respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was using the confusingly similar domain name to attract Internet users to its commercial website).
The Panel thus finds that Policy ¶ 4(a)(iii)
has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <optimacondos.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: October 9, 2007
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